News and Analysis • Volume 10 • Number 7 • November 2006
WIPO General Assembly Charts Way Forward
Member governments of the World Intellectual Property Organisation reached agreement on how to proceed with negotiations on a new broadcasting treaty, as well as proposals for a WIPO Development Agenda during the fall meeting of the institution’s highest decision-making body.
Unauthorised re-transmission/recording of broadcasts – facilitated by new means of communication, such as broadband and the internet – is becoming increasingly common. For instance, iCraveTV.com made 17 US and Canadian television stations available on the internet in 2000 without the permission of broadcasters. (The service closed down after 62 days after a coalition of broadcasters successfully sued the company.)
Fixing (recording) and re-transmitting broadcasts without authorisation is called ‘signal theft’ as the original broadcaster gets no compensation for the reuse of its programme (news, sporting event, game show, etc.) and may even lose some of its own audience.
This has led ‘traditional’ television, radio, satellite and cable broadcasters to seek a new treaty to improve protection of their products worldwide. The proposal has been discussed in the WIPO Standing Committee on Copyrights and Related Rights since 1998.
Rights- or Signal-based Approach?
One option debated in the committee would provide a legal basis to sue infringement cases through granting broadcasters substantive intellectual property rights over their transmissions and the ‘fixations’ – recordings or other forms of storing – of those transmissions, as well as a series of post-fixation rights for possibly twenty or even fifty years. Following the example set by the 1961 Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organisations, this ‘rights-based’ approach would award broadcasters rights over both the transmission and the artistic works being transmitted, putting them on equal footing with recording companies. However, the fact that the content of transmissions rather than just the signal (i.e. the broadcaster’s product) would be protected, has given rise to questions over whether protection would also be extended to works already in the public domain.
An alternative option would create penalties for international signal theft (i.e. unauthorised re-transmission). The ‘signal-based’ approach – already adopted by another WIPO treaty, the Brussels Convention relating to Distribution of Programme-Carrying Signals Transmitted by Satellite – would allow broadcasters to stop the re-transmission of their signal without adding another layer of copyright protection over existing works.
The draft broadcasting treaty submitted to the consideration of the 2006 WIPO General Assembly took the rights-based approach, but the proposal faced considerable opposition from various countries, including the US, Canada, India, Chile and other developing countries. They considered that there were many issues that still needed discussion, and called for further work on the treaty’s general principles, subject matter, scope, exceptions, limitations and technological protection measures.
In a highly unusual joint statement, major technology manufacturers (including AT&T, Intel, Dell, HP and others) and civil society groups active in the international intellectual property rights debate (such as CP Tech, Electronic Frontier Foundation and Creative Commons) expressed concern that the proponents “had not clearly identified particular problems the treaty would ostensibly solve” and said they “remained unconvinced that the treaty was necessary at all.” Others argued that the rights-based approach would liberally award intellectual property rights without any requirement for originality, creativity or investment; create overlapping rights, which would require approval from both copyright holders and broadcasters to use materials (and potentially translate into higher costs for consumers); compromise access to materials that are freely available in the public domain, and; grant extraordinary powers to broadcasters for 50 years, which is longer than the effective life of a patent.
Road Map for Signal-based Broadcasting Treaty
At the General Assembly, WIPO member states agreed to abandon the rights-based approach and focus narrowly on remedies for signal theft, a breakthrough largely due to a change in the positions of the EU and the US. Two meetings – one in January and the other in June – will be held to define the objectives, scope and object of protection. A Diplomatic Conference (final negotiating session) will be convened in early November 2007 if members succeed in reaching consensus on these issues during the two preparatory meetings. If there is no agreement, discussions will proceed based on the rights-based draft treaty presented to the 2006 General Assembly. Setting that draft aside (at least for the next few months) suits many WIPO members, including the US, which dislikes its public interest clauses on the protection of cultural diversity and encouragement of competition. On the other hand, it responds to developing countries’ wish to move away from the rightsbased approach altogether.
Development Agenda Talks Extended
WIPO members launched a discussion on a Development Agenda in October 2004 (Bridges Year 8 No.8, page 17). The proposal aimed to put development at the heart of the institution’s objectives and activities in order to promote developing countries’ access to knowledge and technology transfer, and to safeguard public interest flexibilities in treaties under negotiation.
Since then, members have brought more than 100 specific proposals to the table and created a Provisional Committee on Proposals Related to a WIPO Development Agenda (PCDA) to review them. In June, the chair of the committee attempted to streamline the proposals by combining them into a single text for discussion, but the talks broke down with no clarity on what should happen next (Bridges Year 10 No.4, page 18). The General Assembly extended the PCDA’s mandate for another year and decided to hold two five-day meetings to address all the proposals. The first meeting will examine the 40 proposals identified in the controversial June text, while the second will focus on the remaining 71 proposals. The latter essentially address issues raised by the ‘Friends of Development’ (FoD)1, which initiated the Development Agenda debate. The PCDA is mandated to make recommendations to the 2007 General Assembly for further action.
Patent Harmonisation Deferred to Next General Assembly
The stalemate in the Standing Committee on Patents (SCP) on a potential treaty on patent harmonisation persisted through the General Assembly. Discussions in the committee have been adrift since April 2006, when a meeting collapsed in acrimony due to differences between developed and developing countries on the terms of the treaty, which would require states to harmonise their national patent systems. Ultimately, members simply agreed to defer discussions on the Substantive Patent Law Treaty for a year.
Broadly speaking, developing countries fear that a harmonisation of patent laws would target the basic criteria of patentability (novelty, inventive step and industrial application) and therefore widen what is patentable today. A revision of patentability criteria could imply an extension of patent protection to ‘inventions’ currently deemed unworthy because of their relatively low level of ‘inventiveness’ or lack of clear ‘industrial applicability’, such as mere discoveries, business methods, trivial innovations and second uses. They argue that this would be detrimental to innovation and the public interest, and have pushed for any treaty to address development concerns including exemptions to patentability, as well as compulsory disclosure and benefitsharing for any genetic material or traditional knowledge used in an invention.
These divisions re-emerged at the General Assembly. Developed countries wanted the Standing Committee to start work on a limited list of priority issues, such as ‘first to file vs first to invent’, the definition of prior art and grace period (novelty-related issues), and ‘inventive step’. The FoD opposed this, arguing that the committee should also address a broader range of issues, including development and policy space flexibilities; exclusions from patentability; exceptions to patent rights; anti-competitive practices; disclosure of origin; prior informed consent; disclosure, access and benefit-sharing related to genetic resources and traditional knowledge; and effective mechanisms to challenge the validity of patents. Chile, India, Indonesia and Pakistan also objected to the proposed work plan.
Brazil emphasised that patent law harmonisation should not come at the expense of developing countries. Pointing to growing concerns about the patent system even in rich countries, Brazil proposed carrying out impact assessment studies before proceeding with talks on harmonisation or norm-setting.
In the absence of consensus, members decided to reconsider the issue at the next General Assembly. Governments should submit proposals for future work of the Standing Committee on Patents before December 2006, and informal consultations will be held in the first half of next year with the aim of recommending a work plan for the committee to the 2007 General Assembly. Several observers said that the period for the submission of proposals was too short to allow a substantive debate to take place early nest year.
Work on Genetic Resources and Traditional Knowledge to Proceed
Two issues have acquired significant importance in different fora during the last few years: the illegal use or incorporation (misappropriation) of genetic resources in biotechnological inventions and the protection of the knowledge, innovations and practices of indigenous and local communities. While many still consider genetic resources as ‘natural raw materials’ and traditional knowledge (TK) as ‘old innovations’, there is an increasing recognition and reaffirmation of national sovereign rights over genetic resources, as well as the value of indigenous and local conservation efforts and knowledge to the development of new crops, medicines, dyes, perfumes, cosmetics and other products extensively used by humankind.
The Intergovernmental Committee on Traditional Knowledge, Folklore and Genetic Resources (IGC) was established in 2000 to address problems arising from the lack of moral recognition, economic compensation and reaffirmation of ‘ownership/control’ over genetic resources and traditional knowledge when granting intellectual property rights.
At the 2006 General Assembly, WIPO members agreed to continue work on how best to protect indigenous communities’ knowledge. Many developing countries called for the establishment of a legally-binding instrument to prevent the misappropriation of genetic resources and to protect traditional knowledge. Some developed countries, including the US and the EU, acknowledged the significance of the issue but called for further discussion.
The IGC has discussed both ‘positive protection’ and ‘defensive protection’ as possible approaches to protecting traditional knowledge. Positive protection refers to the acquisition by the TK holders themselves of an IPR-type of protection or an alternative right provided in a sui generis system (liability rules, unfair use and unjust enrichment). Defensive protection refers to legal or regulatory provisions aimed at preventing the granting of IP protection to genetic resources/TK, cultural expressions or products illegally acquired/used by unauthorised persons or organisations.
This year one of the main achievements of the IGC was the creation of a fund for the participation of indigenous and local communities in its discussions and negotiations. At the IGC’s December 2006 session, Members will focus on a set of principles and guidelines to protect TK and folklore, and on exploring options for giving an international dimension to the committee’s work.
Endnotes
1 The Friends of Development are Argentina, Bolivia, Brazil, Cuba, the Dominican Republic, Ecuador, Egypt, Iran, Kenya, Peru, Sierra Leone, South Africa, Tanzania, Uruguay and Venezuela.